- Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01261 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief on substitute-claim patentability after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“no intervening change in law.” Prior to the Federal Circuit’s en banc decision in Aqua Products, the Board indicated that “[t]he burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner.” MasterImage, Case IPR2015-00040, slip op. at 2 (clarifying Idle Free sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 4 (PTAB June 11, 2013)) (emphasis added). In Aqua Products, patentee appealed from the final written decision of the Board, which denied patentee’s motion to amend, challenging the Board’s amendment procedures that required patentee to demonstrate that amended claims would be patentable over prior art. A panel decision from the Federal Circuit affirmed the Board’s decision, but the Federal Circuit granted patentee’s request for 3 rehearing en banc and, subsequently, in its en banc decision, vacated and remanded the Board’s decision. The Federal Circuit’s en banc decision clearly stated that “[t]he matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1296 (emphasis added). Accordingly, Patent Owner’s argument that “there is no intervening change of law” is misplaced.” slip op. at 3
- BurdenOther
“holding in Aqua Products. Aqua Products, 872 F.3d at 1296 (instructing the Board to “assess[] the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner”) (emphasis added). We address below each of the Patent Owner’s arguments in turn.” slip op. at 3
NonePatents in suitUS 8,457,113 - Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01260 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place its order authorizing Petitioners to file a 15-page supplemental brief on motion-to-amend patentability after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
NonePatents in suitUS 8,457,113 - Cisco System, Inc. / Ymax Corporation et al. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01262 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief on patentability of substitute claims after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
NonePatents in suitUS 7,764,777 - Cisco System, Inc. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01258 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to reconsider authorization for Petitioners to file a limited supplemental brief addressing Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
- BurdenDecided for petitioner
“Patent Owner’s arguments are misplaced, as they ignore the actual holding in Aqua Products. Aqua Products, 872 F.3d at 1296 (instructing the Board to “assess[] the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner”) (emphasis added). We address below each of the Patent Owner’s arguments in turn.” slip op. at 3
NonePatents in suitUS 7,764,777 - Cisco System, Inc. / Ymax Corporation et al. v. Focal IP, LLCRehearing deniedPTAB · Nov 17, 2017 · IPR2016-01257 · APJ Joni Y Chang · IPR · Rehearing
The Board denied Focal IP’s request to bar Petitioners from filing a limited supplemental brief on the patentability of substitute claims after Aqua Products.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“rehearing en banc and, subsequently, in its en banc decision, vacated and remanded the Board’s decision. The Federal Circuit’s en banc decision clearly stated that “[t]he matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.” Aqua Products, 872 F.3d at 1296 (emphasis added). Accordingly, Patent Owner’s argument that “there is no intervening change of law” is misplaced.” slip op. at 4
NonePatents in suitUS 8,457,113 - HTC Corporation / HTC America, Inc. v. U.S. Philips CorporationRehearing deniedPTAB · Oct 19, 2017 · IPR2017-00856 · APJ Kristen L Droesch · IPR · Rehearing
The Board denied the rehearing request, leaving institution denied because the patent did not disclose sufficient structure for the claimed means-plus-function limitation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the decision should be modified is on Petitioner, the party challenging the decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[W]e understand Petitioner to assert that the claimed function includes “imparting an acceleration based motion pattern to a predetermined selection among said objects,” and the structure corresponding to the claimed function is a programmed data processor or data microprocessor 22, and the flow chart of Figure 5. Patent Owner does not dispute Petitioner’s claim constructions for “data processing means” and “programmed calculating means.” See Prelim. Resp. 12–14. Patent Owner, however, provides an explicit claim construction for “an acceleration based motion pattern” as “a pattern of motion which reflects acceleration.” Id. at 13 (citing Ex. 1001, 3:63–4:14; Ex. 2001, 11); see id. at 18. Dec. 10–11. We further explained: The ’797 Patent disclosures cited by Petitioner reveal no more than a general purpose “programmed data processor.” See Pet. 24–27; Ex. 1001, Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5. The cited ’797 Patent disclosures do not describe an algorithm, expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure for “imparting an acceleration based motion pattern to a predetermined selection among said objects.” See Pet. 24–27; Ex. 1001, Abstract, 2:42–44, 50–53, 57–60, 4:15–39, Figs. 1, 5. To the extent that Petitioner contends that the Figure 5 flow chart is the algorithm for the programmed data processor, as explained before, the cited ’797 Patent disclosures related to Figure 5 are silent with respect to “imparting an acceleration based motion pattern to a predetermined selection among the objects.” Dec. 12.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s arguments are not persuasive because Petitioner does not identify where these arguments were raised previously. See Req. Reh’g 1–3; 37 C.F.R. § 42.71(d). We cannot overlook arguments not made on the record before us. Petitioner presents these arguments addressing the combination of the ’797 Patent disclosures directed to Figures 4 and 5 for the first time in the Request for Rehearing. Compare Req. Reh’g 7–10, with Pet. 6–7, 15–16, and Prelim. Resp. 6.” slip op. at 9
NonePatents in suitUS 5,910,797 - PTAB · Oct 6, 2017 · IPR2017-00814 · APJ Daniel J Galligan · IPR · Rehearing
The Board denied rehearing, leaving in place the denial of institution for claims 4, 9, and 13 because the Petition did not adequately explain how Shigeeda discloses maintaining cache coherency.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” The party requesting rehearing has the burden of showing that the decision from which rehearing is sought should be modified, and “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner provides no further explanation of this citation [(Shigeeda, 42:38–47)]—specifically why a cache flush that occurs only upon the write-back cache’s becoming full of dirty data to “reestablish coherency” discloses “maintain[ing] cache coherency.” Petitioner also cites Shigeeda’s Abstract (Pet. 48 n.105) but provides no further explanation of its relevance. Although Shigeeda’s Abstract mentions a cache flush operation, it does not explain how a cache flush discloses an operation “to maintain cache coherency,” as recited in claim 4. Dec. on Inst. 20–21 (first alteration added). This explanation was directed to the requirement of claim 4 to “maintain cache coherency.” Id. at 20. Following this explanation, we stated: “Second, Petitioner does not explain sufficiently how bus bridge 716 ‘operate[s] to maintain cache coherency for the integrated circuit,’ as recited in claim 4.” Id. at 21. This second reason for denying institution as to claim 4 was specific to claim 4’s requirement of a “bridge circuit to operate to maintain cache coherency for the integrated circuit.” See id. at 21–22.” slip op. at 3
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner also cites a ten-page passage from the testimony of its declarant, Dr. Weissman. See Ex. 1003 ¶¶ 112–129 (cited at Pet. 48 n.104). The cited testimony provides a lengthy explanation as to how Shigeeda allegedly discloses cache coherency in two ways. See id.; see also id. ¶ 116 (“Shigeeda solves the problem of cache incoherency, and maintains the coherence of its caches, in two ways.”). This explanation as to Shigeeda, however, is absent from the Petition. A declaration in support of a petition may be proffered as evidence in support of an argument made in the petition. Such a declaration, however, is not a vehicle through which a petitioner may make an argument that should have been made in the petition. To permit otherwise would allow petitioners to exceed the word limits of our Rules (see 37 C.F.R. § 42.24) and force the patent owner to respond to arguments not made in the petition. Dec. on Inst. 22; see also id. at 23–24 (“Because Petitioner’s contentions as to claims 9 and 13 rely on its inadequate explanations as to claim 4 and do not provide further explanation regarding how Shigeeda allegedly discloses maintaining cache coherency, we determine the information presented in the Petition does not show a reasonable likelihood Petitioner would prevail in challenging claims 9 and 13 as anticipated by Shigeeda.”).” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We disagree. Petitioner’s citation to such a lengthy passage in its declarant’s testimony (greater than 10 pages) is not an adequate identification of a “specific portion[] of the evidence,” as required by our Rules. See 37 C.F.R. § 42.104(b)(5) (“The Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge.”). Indeed, some of the cited testimony appears to be directed to a theory of how Shigeeda allegedly discloses cache coherency that is not argued in the Petition. See Ex. 1003 ¶¶ 116–118. In particular, Dr. Weissman testifies that “Shigeeda solves the problem of cache incoherency, and maintains the coherence of its caches, in two ways.” Ex. 1003 ¶ 116. The first way identified by Dr. Weissman is “by implementing cache 704 as a write-through cache,” and the “second way involves implementing data circuit 720—which, like cache 704, is also a cache memory—as a write-back cache with a specific cache coherence protocol.” Ex. 1003 ¶¶ 116, 119. By contrast, Petitioner identifies only one way in which Shigeeda allegedly discloses cache coherency: “Shigeeda uses an ‘automatic write,’ or a ‘cache flush,’ of the write-back cache block to ‘reestablish coherency’ in its system.” Pet. 48 (citing Ex. 1005, Abstract, 42:38–47). This appears to correspond to the second way identified by Dr. Weissman, who testifies that, “[u]pon the write-back cache being full of modified data, an ‘automatic write’ to main memory—also called a ‘cache flush’—is performed to ‘reestablish coherency.’” Ex. 1003 ¶ 121 (citing Ex. 1005, Abstract, 31:65– 32:20, 42:38–59). Thus, it is unclear what relevance, if any, Dr. Weissman’s testimony regarding the first cache coherency theory has to the arguments in the Petition. Additionally, with respect to Petitioner’s contentions as to how the bus bridge allegedly operates to maintain cache coherency, as explained in the Decision on Institution, “Petitioner cites five columns and two figures from Shigeeda without any further explanation in the Petition specifying the relevance or significance of this cited evidence.” Dec. on Inst. 21. This lack of clarity as to Petitioner’s contentions highlights the problem with naked citations to lengthy portions of the evidence without accompanying explanations.” slip op. at 6
NonePatents in suitUS 6,766,389 - Fedex Corporation v. Intellectual Ventures II LLCRehearing deniedPTAB · Sep 5, 2017 · IPR2017-00750 · APJ David C Mckone · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1, 3–5, 7, 10–14, and 17.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burden of showing that the Decision should be modified is on Petitioner, the party challenging the Decision. See 37 C.F.R. § 42.71(d). In addition, “[t]he request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“consider. Upon consideration of this evidence, we concluded that “Dr. Hill does not identity any known automation techniques or provide any evidence that employing autonomous vehicles to pick up and/or return items would have been a known example.” Dec. 15.” slip op. at 5
- BurdenDecided for patent owner
“consider. Upon consideration of this evidence, we concluded that “Dr. Hill does not identity any known automation techniques or provide any evidence that employing autonomous vehicles to pick up and/or return items would have been a known example.” Dec. 15.” slip op. at 5
NonePatents in suitUS 6,909,356 - NVIDIA Corporation v. Polaris Innovations LimitedRehearing deniedPTAB · Aug 16, 2017 · IPR2017-00381 · APJ Barbara A Parvis · IPR · Rehearing
The Board denied Polaris’s rehearing request, finding no abuse of discretion in instituting review of claims 1–28 despite its arguments about the read clock limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).” slip op. at 2
- Expert testimonyNot reached
“Regarding the “read clock signal generated from the second clock signal” recited, for example, in claim 2, Patent Owner points to contentions in its Preliminary Response (Paper 7, “Prelim. Resp.”) presented with respect to the second challenge in the Petition, i.e., obviousness over Lee alone. Id. at 4–6. Although Patent Owner acknowledges (id. at 10) we did not institute on this challenge (see, e.g., Dec. at 27), Patent Owner argues its Preliminary Response indicated those same contentions are applicable to the third and fourth challenges of obviousness over Lee and other art, i.e., Yoo and Kyung. Req. Reh’g at 7–10 (citing Prelim. Resp. 15–16, 21–22, 26, 31). More specifically, Patent Owner argues we overlooked its contentions regarding improper combination of different embodiments in Lee. Id. at 4, 5. Unlike the second challenge of obviousness over Lee alone, however, with respect to the third and fourth obviousness challenges, as discussed in the Decision, Petitioner identified pertinent teachings in the additional prior art references, Yoo and Kyung, for the disputed limitation. See Dec. 19–21. Furthermore, Patent Owner identifies in its Preliminary Response only conclusory statements. For example, Patent Owner points to the following: “[a]ll three of these challenges are deficient with respect to the base claims” and “[t]his flaw undercuts all challenges.” Req. Reh’g at 8 (citing Prelim.” slip op. at 3
NonePatents in suitUS 7,886,122 - Samsung Electronics Co., Ltd. v. Ibex PT Holding Co., Ltd.Rehearing deniedPTAB · Jul 24, 2017 · IPR2017-00102 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied Samsung’s rehearing request, leaving in place the denial of institution for claims 1–5 based on its construction of “merge mode motion information decoding unit.”
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For these reasons, Petitioner has not demonstrated error in our construction of “merge mode motion information decoding unit” and therefore has not shown the Decision should be modified.” slip op. at 5
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner
“claimed merge mode motion information decoding unit, Petitioner contends that only block 238 is necessary to perform the recited “decoding motion information” function. Req. 3–4. As explained in the Decision, however, motion information generating unit 238 selects a merge predictor from a list generated by merge candidate list generation unit 236 and then determines motion information of the selected merge predictor as motion information of a current block. Dec. 11 (citing Ex. 1001, 12:56–61). We are not persuaded by Petitioner’s attempt to equate the “determining” function performed by motion information generating unit 238 with the “decod[ing]” function recited in the claim, particularly when the ’855 patent refers to the entirety of Figure 5 (i.e., blocks 231–238) as a “merge mode motion information decoding unit.” See Req. 5.” slip op. at 4
Claim constructionPatents in suitUS 8,654,855
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.